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Thursday, January 17, 2013

Careless Whispers: Tivo v Vivo

By Ali Ridley, Lawyer

A recent decision of the Full Federal Court has emphasised the importance of considering the aural and phonetic similarities between trade marks, rather than solely the visual similarities, when determining if marks are deceptively similar.

The Full Court considered deceptive similarity, among other issues, in relation to two marks owned by the audiovisual companies, Tivo Inc and Vivo International Corporation Pty Ltd for the words Tivo and Vivo respectively. 

Primary decision

In the first instance decision, Dodds-Streeton J held that it was significant that the two marks had a striking aural similarity. In particular, the prominence of the IVO part of the mark was significant. This factor, combined with the possibility of careless pronunciation, cursory reading, imprecise articulation and imperfect recollection meant it was likely confusion would occur. This was further compounded by the similarity of the products and the similar environments in which they were to be purchased. While there was no evidence of customers being confused, the judge found that the evidence of trained staff being confused indicated that it was likely that ordinary consumers would also be confused by the two marks.

Accordingly, the two marks were found to be deceptively similar.

Appeal decision

In two separate judgements, the Full Federal Court upheld the decision of the primary judge. In response to submissions by Vivo, the court found that the primary judge did consider the lack of visual similarity between the two marks as a factor in making her decision. The Full Federal Court also noted that while Vivo's expert had established that Tivo and Vivo were phonetically different, it was significant that similar sounds characterised their pronunciation.

Both judgements emphasised that the relevant test is not whether the marks are substantially identical, but instead whether they are apt to cause confusion. In this instance, the Full Federal Court found that the marks were apt to cause confusion and the visual differences between the marks were insufficient to dispel this confusion.

While evidence was adduced at trial that the owner of Vivo may have had dishonest intentions in the selection of Vivo as a mark, the Full Federal Court unanimously found that it was not open to the primary judge to attach relevance to any alleged dishonesty in the determination of deceptive similarity. This was because dishonesty in relation to deceptive similarity was outside the scope of Tivo's pleadings, which expressly confined Tivo's case to the proposition that Vivo's evidence could not be used to establish honest concurrent use of the Vivo trade mark. However, this ruling did not upset the trial judge's finding of deceptive similarity.

The judgements diverged on whether the inference that, if sales staff are confused with regards to the two marks, customers will also be confused, was reasonable. The Chief Justice of the Full Federal Court found that such an inference was reasonable and furthermore, the confusion arising from the similarities between the marks would not necessarily be dispelled by presenting the competing goods to a consumer in a retail setting. Ordinary consumers may believe that the two brands belong to the one family, in which the Tivo product represents that luxury end of the range and the Vivo product the economy end of the range.

In contrast, Nicholas J (with whom Dowsett J agreed) found that actual confusion of sales staff was improbable, but nonetheless, given the phonetic similarity of the marks, ordinary consumers with imperfect recollection may not appreciate the differences between the two marks.

Ultimately, the Full Federal Court upheld the primary judge's finding that the Vivo mark infringed the prior TIVO registration and decision to revoke the Vivo registration.

Determining what is deceptively similar

In determining whether a mark may be deceptively similar, it is important to consider the two factors raised by the court, that is:
  • the aural effect and impression of the relevant marks; and
  • the phonetic similarity of the relevant marks.
Although it's a fine distinction between those two factors, the sounds of two close marks should very much be taken into account, while bearing in mind the practical trading circumstances in which they will be used, and discounting a potential customer's excessive carelessness or stupidity.

Knowing exactly when those circumstances are enlivened requires careful judgment, because marks with phonetically and visually distinct portions may be found to be deceptively similar in instances where the marks have significant portions that are aurally similar and the products supplied under those marks are also similar.

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